Ex Parte Wolfston et al

Board of Patent Appeals and Interferences

Mar 5, 2012

10890881 (B.P.A.I. Mar. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/890,881 07/14/2004 James H. Wolfston JR. C056DIV 1388
25784 7590 03/06/2012
MICHAEL O. SCHEINBERG
P.O. BOX 164140
AUSTIN, TX 78716-4140
EXAMINER
HUYNH, THU V
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
03/06/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES H. WOLFSTON, JR.
MICHAEL D. HITCHCOCK, DAVID M. FOGARTY, and
MICHAEL W. RATLIFF
____________________

Appeal 2009-013043
Application 10/890,881
Technology Center 2100
____________________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

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The Appellants filed a REQUEST FOR REHEARING on Feb. 13, 2012.
The Examiner rejected claims 1-16 and 33-46. We affirmed these rejections in our
Decision entered Dec. 13, 2011. The Appellants seek reconsideration of the
Decision to affirm these rejections.
We DENY the REQUEST FOR REHEARING.
ISSUES
The issue pertinent to this request is whether the Appellants have sustained
their burden of showing that we misapprehended the art or the claims and thus
erred in sustaining the rejections of claims 1-16 and 33-46. 37 C.F.R. 41.52(a)(1).
The pertinent issue turns on: (a) whether we misapprehended the Appellants’
arguments, (b) whether we misapprehended the cited prior art, and (c) whether our
findings beyond affirming the Examiner’s findings constitute a new ground of
rejection.
ANALYSIS
We found in our decision that the Examiner did not err in the rejection claims
1-16 and 33-46. Decision 10.
The Appellants first contend that we misunderstood or mischaracterized the
Appellants’ arguments with respect to the § 103 rejection. Request 2-6. The
Appellants specifically argue that we failed to consider the claim’s requirements as
a whole. Request 3. We disagree with the Appellants. We begin by pointing out
that the Appellants’ first argue that the cited prior art fails to teach or suggest claim
1. This argument consisted of the Appellants reproducing all three method steps
included in the “application form” of claim 1 and, further, underlining each of
these steps as an emphasis that the prior art failed to teach or suggest these
limitations. The Appellants contend that this alleged argument supports an
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argument of claim 1 as a whole. Request 2-3 and 5-6. However, we do not find
that such statements constitute a substantive argument because these statements do
not specifically point out how the claimed invention is distinguished from the prior
art and, therefore, are nothing more than naked assertions that the corresponding
elements are not found in the prior art. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); In re Lovin, 99 USPQ2d 1373,
1379 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
The Appellants further contend that we misunderstood the holding in In re
Merck. Request 3-4. We disagree with the Appellants. The holding in Merck
clearly sets forth that “[n]onobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination of
prior art disclosures.” See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The Appellants acknowledge that their arguments consisted of addressing
each reference separately and sequentially, in order to rebut findings that the prior
art describes features of the claimed invention. Request 4. The Appellants further
acknowledge that the Appellants address specific statements made by the
Examiner. Request 3. As such, it is clear that the Appellants have set forth
arguments against each reference individually in sequential order, even though the
rejection is based on the combination of the references as a whole. Since this is
explicitly the holding in In re Merck, we do not agree with this contention asserted
by the Appellants.
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The Appellants again contend that SURP fails to describe reviewing data as it
is entered and although Tengel and Steigemeier teach or suggest this feature,
Tengel and Steigemeier still fail to teach or suggest other requirements of the
claim. Request 5. The Appellants also argue that error checking is different from
the data review step described in the Appellants’ Specification. Request 5. We
disagree with the Appellants. We have fully considered this argument in our
Decision and do not find this argument persuasive for the reasons set forth in our
Decision. Decision 6-7.
The Appellants additionally argue that our interpretation of claim language is
not consistent with the Specification. Request 6-7. The Appellants specifically
argue that claims 1 and 38 require “display[ing] [a] communication […] the
communication expressing a common interest, as determined by the data entered,
between the applicant and the person associated with the institution,” and our
Decision misconstrued the limitation that the communication expresses a common
interest. Request 6-7. We agree with the Appellants in as much as our statement
that “the communication is a common interest” (Decision 7) should have read “the
communication expresses a common interest.” However, we find that this
misstatement amounts to harmless error. Moreover, we disagree with the general
thrust of the Appellants’ argument. The Appellants argue that our construction of
“expressing a common interest” is inconsistent with the Specification, but fails to
provide any definition or even examples in the Specification that such an
interpretation would be inconsistent with. Absent any evidence or rationale to
illustrate error in our claim construction, we find that our interpretation of this
limitation is both reasonable and consistent with the Specification. The Appellants
further argue that the cited prior art fails to teach or suggest this and other features
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of claims 1 and 38; however we find these arguments unpersuasive for the same
reasons set forth in our Decision.
The Appellants further contend that we failed to give patentable weight to
“personal information” and such a rationale should have been designated as a new
ground of rejection. Request 9-10. We disagree with the Appellants. First, we
point out that our rationale that personal information is nothing more than
nonfunctional descriptive material was submitted in addition to the Examiner’s
findings that the combination of the cited prior art teaches or suggests “personal
information.” Decision 9. This is further evidenced by our use of the term
“furthermore” prior to presenting this rationale. As such, we do not designate this
rationale as a new ground of rejection because we sustain the Examiner’s rejection.
Furthermore, the Appellants submit that “personal information” is functionally
integrated to the method because “[p]ersonalized encouragement obviously
requires the disclosure of personal information, as does the determination of
whether a communication expresses a common interest between the applicant and
a person associated with the institution.” Request 10. However, the claims do not
require “personalized encouragement.” Even assuming, arguendo, that the claims
require “personalized encouragement,” the Appellants have failed to provide any
rationale or evidence to illustrate how the entered “personal information” is
functionally related to a step of “personalized encouragement.” As such, we are
not persuaded by the Appellants’ argument.
The Appellants also contend that our statement “Appellants have failed to
provide sufficient rationale or evidence to illustrate why the combination of the
known elements described by SURP, Stiegemeier, and Tengel would not yield
predictable results” should have been designated as a new ground of rejection.
Request 10-11. We disagree with the Appellants. This rationale was also
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presented in addition to the Examiner’s finding that a person of ordinary skill in
the art would have been motivated to combine the cited prior art. Decision 8-9.
This is evidenced by our use of the term “furthermore” that the Appellants have
omitted from their citation. Decision 8-9 and Request 10-11. Since we sustained
the Examiner’s findings and presented this rationale in addition to sustaining the
Examiner’s findings, we will not designate this rationale as a new ground of
rejection.
For the above reasons we are not persuaded of reversible error in our decision.
Accordingly, the Appellants’ request for rehearing is denied.

DECISION
To summarize, our decision is as follows:
 We have considered the REQUEST FOR REHEARING.
 We DENY the request that we reverse the Examiner as to the rejection of
claims 1-16 and 33-46.
 The rejection of claims 1-16 and 33-46 remains sustained.

REHEARING DENIED

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